Opposition by Calvin Klein Trademark Trust to registration of trade mark application no. 1977830 –CJK- in the name of Korea Ginseng Corp.

[2021] ATMO 90

TRADEMARKSACT1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Calvin Klein Trademark Trust to registration of trade mark application no. 1977830 –CJK- in the name of Korea Ginseng Corp.

DELEGATE:

Bianca Irgang

REPRESENTATION:

Opponent: Submissions by Phillips Ormonde Fitzpatrick

Applicant: Submissions by Benjamin Fitzpatrick of counsel, instructed by Spruson & Ferguson

DECISION:

2021 ATMO 90

Trade Marks Act 1995 (Cth) - Section 52 opposition: sections 42(b), 44, 58 and 60 pressed – ground of opposition partially established under section 60 – no other ground of opposition established – applicant provided with opportunity to amend the application – application

  amended as per applicant’s request.  

Background

1. Korea Ginseng Corp (‘the applicant’), filed trade mark application number 1977830 on 28 December 2018 in class 35 of the International Classification of Goods and Services. Current details of the application are set out below.

wholesale services for dried fruits and vegetables; Retail services or wholesale services for cooked fruits and vegetables; Retail services or wholesale services for red ginseng; Retail services or wholesale services for red ginseng products, processed; Retail services or wholesale services for processed food; Retail services or wholesale services for edible oils and fats; Retail services or wholesale services for edible food products made from oil and fats; Retail services or wholesale services for seaweeds for medicinal herbs; Retail services or wholesale services for processed products; Retail services or wholesale services for dietary supplements for humans; Retail services or wholesale services for dietetic foods adapted for medical purposes; Retail services or wholesale services for dietetic beverages adapted for medical

purposes; Retail services or wholesale services for medicinal herbs; Retail services or wholesale services for cereal-based processed products; Retail services or wholesale services for confectionery; Retail services or wholesale services for bread; Retail services or wholesale services for

chocolate; Retail services or wholesale services for candy; Retail services or wholesale services for ice

cream; Retail services or wholesale services for honey; Retail services or wholesale services for tea; Retail services or wholesale services for coffee and cocoa; Retail services or wholesale services for tea-based beverages; Retail services or wholesale services for soft drinks; Retail services or wholesale services for preparations for making effervescent

beverages; Retail services or wholesale services for non- alcoholic beverages; Retail services or wholesale services for alcoholic drinks.

1. Acceptance of the application for possible registration was published in the Australian Official Journal of Trade Marks on 16 July 2019. Subsequently Calvin Klein Trademark Trust (‘the opponent’) filed a Notice of Intention to Oppose registration followed by its Statement of Grounds and Particulars1.

2. The applicant then filed its Notice of Intention to Defend. Thereafter the opponent and applicant respectively filed evidence in accordance with the provisions of the Trade Mark Regulations 1995 (‘the Regulations’).

3. The matter come before me on the basis of submissions on 3 March 2021. The applicant provided submissions by way of its representatives Benjamin Fitzpatrick of counsel,

¹ which together constitute ‘the Notice’

instructed by Spruson & Ferguson. The opponent provided submissions by way of    its representatives, Phillips Ormonde Fitzpatrick.

Grounds of Opposition

1. The Notice nominated five grounds of opposition under the Trade Marks Act 1995 (‘the Act’) but only those grounds under sections 42(b), 44, 58 and 60 were pursued. The onus is upon the opponent to establish one or more of its grounds of opposition. The Full Bench in Telstra Corporation Limited v Phone Directories Company Pty Ltd2 affirmed the approach in Pfizer Products Inc. v Karam3 where Justice Gyles J referred to the standard of proof required in these matters in terms of a ‘balance of probabilities’. Should the opponent establish one ground of opposition in relation to all of the applicant’s services, there is no requirement for me to consider the other grounds of opposition.

Evidence

1. The evidence in this matter consists of the following declarations:

Evidence in Support

·Declaration of Deirdre Miles-Graeter (‘Miles-Graeter’) dated 27 January 2020, with Exhibits A to O

Evidence in Answer

·Declaration of Kim Jae Soo (‘Soo’) dated 13 April 2020, with Exhibits 1 to 7

Evidence in Reply

·Declaration of y Russell John Waters dated 15 June 2020, with Exhibits RJW-1 to RJW-3

Further Evidence of the Applicant

·Confidential Exhibit 6

Discussion

Section 44 –Substantially Identical or deceptively similar

1. Section 44 of the Act relevantly provides:

44       Identical etc. trade marks

² [2015] FCAFC 156, [133]

³ [2006] FCA 1663, [26]

(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

(a)it is substantially identical with, or deceptively similar to:

(i)a trade mark registered by another person in respect of similar services or closely related goods; or

(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

1. To establish its opposition under section 44 of the Act the opponent must show all of the following:

   Øa trade mark (or trade marks), either registered or applied for, in the name of a person other than the applicant, and in relation to which the applicant’s trade mark is either substantially identical or deceptively similar;

   Øthe trade mark(s) in the name of the other person must be in respect of similar services or closely related goods; and

   Øthe priority date of the trade mark(s) of the other person is (must be) earlier than the priority date of the Trade Mark

2. The opponent cited one trade mark registration in support of the section 44 ground of opposition which is as follows:

 

Class 16: Paper, cardboard and goods made from these materials not included in other classes, printed matter, printed materials, stationery, gift wrap; patterns; drawer and shelf liners; adhesives for stationery or household purposes; plastic materials for packaging (not included in other classes); window coverings in this class

Class 18: Goods made from leather and imitations of leather not included in other classes including handbags, wallets, key cases, change purses, cosmetic bags and pouches, portfolios, suit bags, trunks, suit cases, billfolds, duffle bags, tote bags, brief cases and attache cases, luggage, overnight cases, credit card holders, business card holders, travelling bags; umbrellas, parasols and walking sticks; belts in this class

Class 20: Furniture, mirrors, picture frames, picture frames made of or coated with leather, curtains in this class

Class 21: Housewares; glass in this class; household and kitchen utensils and containers not of precious metal or coated therewith; ceramics, porcelain, and earthenware household items including bowls, platters, pitchers, casseroles, salt and pepper shakers, beverage serving accessories including tea or coffee pots, sugar bowls and creamers, mugs; eating, cooking and household decorative utensils; glassware including vases, decanters, candle holders, including metal alloy/wood candle holders, platters, dinnerware; cake and pie servers in this class, tea and coffee sets, bowls, platters, salad servers comprising fork and spoon and/or tong like implement; placemats, coasters; bathroom accessories of glass, nickel plate, wood, stone or ceramic including tumblers, soap dishes, mirrors, boxes; combs, brushes; porcelain items including eating, cooking and decorative utensils, china items including dinnerware and service pieces; crystal items, glassware items, goblets, wine glasses, drinking utensils and pitchers; paper plates; toilet cases and toilet bags, including vanity cases

Class 24: Textile goods including linen goods not included in other classes; fabrics, including linens; bed covers including sheets, pillow cases, comforters, bedspreads, duvets, shams, dust ruffles, blankets, table covers, towels, handkerchiefs, blinds, curtains, drapes and window coverings in this class

Class 25; Clothing including women's, men's, boy's and girl's wearing apparel including jump suits, shirts, blouses, jackets, bathing suits, pants, shorts, warm-up suits, capes, walking shorts, jeans, suits, dinner jackets, raincoats, ties, socks, stockings, tights, hats, outer coats, sweaters, skirts, coats, fur-trimmed coats, furs, vests, T-shirts, tennis and golf dresses, beach and swimming cover-ups, rainwear, raincoats, ponchos, tank tops, blazers, belts (clothing), gloves, dresses, shearling coats and jackets, scarves, shawls, sports jackets; men's and boy's underwear, sleepwear and loungewear including but not limited to briefs, boxers, athletic underwear, sport knits, undershirts, basic underwear and robes, knitted and woven sleepwear, sleep shirts, pyjama tops, pyjama bottoms, breakfast jackets, smoking jackets, bed jackets, cover-ups, knitted and woven loungewear, lounging pants and tops, lounge jackets; women's and girl's underwear, intimate apparel and sleepwear, loungewear, bodywear, foundations, bras, girdles, garter belts,

all-in-ones, corselettes, body stockings, control briefs, control hipsters, waist cinchers, bustiers, camisettes, leotards and unitards, daywear including but not limited to culottes, bikinis, briefs, slips, blouse-slips, camisole slips, chemise slips, culotte slips, evening slips, maternity slips, panty slips, princess slips, shadow panel slips, strapless slips, suit slips, tailored slips, half slips, petti slips, bra slips, chemises, camisoles, bra top camisoles,

bralettes, tap pants and petti-pants; loungewear, sleepwear and bodywear including but not limited to nightgowns, toga nightgowns, night shirts, pyjamas, shortie pyjamas, baby-doll pyjamas, T-shirt pyjamas, french maid sleepers, harem pyjamas, hostess culottes, lounging pyjamas, rompers, sleep shirts, peignoirs, bed jackets, caftans, teddies, bathrobes, dressing gowns, kimonos, housecoats, beach togas, beach wrap-ups, breakfast coats, brunch coats, dusters, hostess robes, kabuki robes, lounging robes, monk's robes, bra tops, crop tops and leggings; footwear including shoes, active sport shoes, sneakers, boots and slippers; headgear including hats and caps

Class 26: Lace and embroidery, ribbons and braids; buttons, hooks and eyes, pins and needles; haberdashery, notions, artificial flowers in this class

Class 27: Carpets, rugs, floor coverings, wall coverings in class 27

Class 35: Business management and business administration services; advertising and promotional services including arranging shoots for production of commercials; arranging shoots for productions of photographs for advertisements, commercials and promotions; selection of locations, models, actors, producers, directors, ancillary support staff and other personnel for commercials and advertisements; production of material for commercials and advertisements; the development of advertising and promotional proposals (eg, in magazines, billboards, kiosks, television and cable television); placement of advertisements and commercials in the mass media including magazines, newspapers, billboards, kiosks, television and cable television

Class 42: Design services relating to retail store layout and decor specifications; development of design boards, story boards, concepts and ideas or materials; arranging shoots for production of photographs; retail store services relating to goods of this application in International classes 8, 9, 14, 16, 18, 20, 21, 24, 25, 26 and 27; retail store services relating to cosmetics and toiletries, eau de toilette, soaps, talc, skin moisturiser and skin care preparations, body soak, body lotions and creams, bath oil, massage oils, bath and shower gel, personal deodorants and antiperspirants, hair care preparations, suncare preparations, potpourri, fragrant sachets and room fragrance

1. The opponent is the registered owner of the above trade mark which has an earlier priority date than that of the Trade Mark. Turning to the respective goods and services of interest to the applicant and the opponent I note that the applicant’s various retail and wholesale services all relate to cosmetics, toiletries, pharmaceuticals, food and beverages. There is only a single point of the overlap between the opponent’s goods and services and those services of interest to the applicant. Namely, the opponent’s services are in relation to the retail of cosmetics and toiletries which are also claimed in class 35 by the Trade Mark. The key issue now to be decided is whether the Trade Mark is either substantially identical or deceptively similar to the opponent’s trade mark. The respective trade marks can be seen below:

Opponent’s trade mark Trade mark

1. I am satisfied the Trade Mark is not substantially identical with the opponent’s trade mark according to the side-by side test set out by Windeyer J. in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd (‘Shell’).4 There is an additional letter ‘J’ in the Trade Mark. This additional letter, when comparing a two letter trade mark with a three letter trade mark, is a significant difference. This additional letter ‘J’ acts as a clear visual and aural difference between the respective trade marks and precludes them from being considered substantially identical.

2. Deceptive similarity is defined in section 10 of the Act as follows:

10 Definition of deceptively similar

For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

1. The test to determine whether trade marks are ‘deceptively similar’ is set out in Shell: 5

The marks are not now to be looked at side by side [as for substantial identity]. The issue is not abstract similarity, but deceptive similarity … the comparison … is between, on the one hand, the impression based on recollection of the plaintiff’s mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impression that such persons would get from the defendant’s [trade mark]

1. The Court added at 416, that:

[The] deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.’ In addition, the test is not one of mere possibility of confusion but of a real tangible danger that a number of persons will be caused to wonder whether the products come from the same source.

1. The decisive question is whether the use of the Trade Mark in connection with the services in Class 35 result in a tangible danger of confusion or deception given the previous registration for the opponent’s trade mark. I do not consider it would. In coming to this conclusion I turn to comparison of the trade marks.

⁴ (1963) 109 CLR 407 at 414.

⁵ (1961) 109 CLR 407 at 415

1. The opponent’s trade mark is two letters being ‘CK’ and the Trade Mark is a combination of three letters being ‘CKJ’. The difference in appearance, aural pronunciation and likelihood of remembering differing ideas is considerable. The single letter difference between the trade marks is striking and is sufficient to differentiate the trade marks from each other. I am not satisfied that the Trade Mark is deceptively similar to the opponent’s trade mark. As such, the opponent has not established the section 44 ground of opposition.

Section 60 - Reputation in Australia

1. Section 60 of the Act provides:

60 Trade mark similar to trade mark that has acquired a reputation in Australia

The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

(a)another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

(b)because of the reputation of that other trade mark, the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

1. To establish the ground of opposition under section 60 the opponent is relying predominantly on its use of and reputation in its various registered trade marks I will discuss later in this decision and the common law trade mark below:

   CKJ

(‘CKJ trade mark’)

1. Unlike section 44 of the Act, section 60 does not require that the goods and services upon which the opponent uses its trade mark be of a specified standard of similarity with the services of interest to the applicant, nor is there a requirement that the trade marks be substantially identical or deceptively similar.

2. It is for me to determine whether the opponent has established that before 28 December 2018 the opponent’s trade marks were recognized by the relevant market, or at least by a significant number of persons in Australia and whether because of that, the use by the applicant of its Trade Mark would be likely to deceive or cause confusion.

1. The principles relevant to the assessment of the likelihood of confusion, etc, were set out by French J in Registrar of Trade Marks v Woolworths: 6

   (ii)   A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

(iii)    In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

(iv)The rights of the parties are to be determined as at the date of the application.

(v)    The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc:7

“...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

1. Reputation is to be assessed according to the test set out in McCormick & Company Inc v McCormick8 by Kenny J:

   What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:

reputation    1. the estimation in which a person or thing is held, esp. by the

community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for

⁶ [1999] FCA 1020 [50]

⁷ [1973] HCA 43; (1973) 129 CLR 353, 362
⁸ [2000] FCA 1335 [81]

merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.

Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.

Does the evidence establish that in Australia before 9 March 1992 the McCormick & Co marks were recognised by the public generally and, because of that, the use by Mary McCormick of her marks would be likely to cause the public confusion, as for example, by the public’s mistakenly attributing a business connection between the two or attributing her product to the company?

1. Miles-Graeter states that the opponent licenses the production and sale of apparel, accessories, fragrances and home products under the trade marks “Calvin Klein”, “CK/Calvin Klein”, “CK”, “CK ONE”, “CK BE”, “Calvin Klein Jeans, “CKJ” and others. The opponent has also produced or licensed the production of certain women’s apparel under the “Calvin Klein” trade mark since 1968. According to Miles-Graeter the opponent has a number of different lines of products including belts, small leather goods, women’s, men’s and children’s jeans, hosiery, shoes, sunglasses and optic wear, handbags, watches, jewelry, home furnishings including bed and bath, dishes, cutlery and other table top merchandise.

2. The opponent’s fragrances include among others, Obsession, Eternity, Escape, CK ONE, CK BE, Truth, Euphoria, Contradiction, Downtown Clavin Klien and other brands. The opponent’s evidence demonstrates an extensive international foray and considerable reputation into different markets and product lines for its various products under the ‘Calvin Klein’ name and the opponent’s trade mark9.

3. When it comes to the CKJ trade mark, the evidence is less clear cut. Miles-Graeter states that the CKJ trade mark was first used in the USA in the 1980s when Calvin Klein Jeans was introduced. The first sales of products under the CKJ trade mark in Australia are alleged to have occurred in the late 1980s or early 1990s when apparel was supplied to David Jones and Myer department stores. Subsequently, use of the CKJ trade mark was made through Calvin Klein branded stores, including Calvin Klein Underwear Emporium and Calvin Klein DFO Essendon10. From the evidence, it appears that the CKJ trade mark has only been used on the opponent’s clothing goods. However, I do note that an internet search of the letters ‘CKJ’ in exhibit K accompanying Miles-Graeter does bring up an overwhelming number of hits related to the opponent and its goods. This is not overly surprising given the reputation that

⁹ Exhibits G-1 and G-2 accompanying Miles-Graeter

¹⁰ Exhibits I and J accompanying Miles-Graeter

the opponent has demonstrated in its CALVIN KLEIN JEANS trade mark when applied to clothing. The opponent also conducted internet searches using the Google search engine for the terms “CKJ”, “CKJ STORE” and “CKJ PERFUME” on Australian websites which produce search results showing that the letters CKJ are most strongly associated with the Opponent’s CALVIN KLEIN products and retail stores11.

1. Furthermore to emphasize the extent of the opponent’s reputation in its trade marks and CKJ trade mark, the advertising and wholesale figures provided by the opponent are extremely considerable. I note that the figures provided by Ms Miles-Graeter are world wide figures and not broken down to represent how many sales or how much advertising expenditure relates to Australia. However, these figures taken together with the other evidence of the opponent’s significant reputation in its trade marks and the CKJ trade mark is sufficient to satisfy me that the opponent had acquired a significant reputation in Australia for its clothing, cosmetics and toiletries and the retail of those goods before the priority date of the Trade Mark. It now needs to be determined if, given this reputation in Australia, use of the Trade Mark by the applicant would be likely to deceive or cause confusion.

2. The opponent’s representatives submitted that:

“…the Opponent’s reputation in the letters CKJ is such that, any use of those letters in the context of retails services will immediately be associated, at first instance, with the Opponent, its products and its stores. Use in relation to retail services is likely to suggest that the services are supplied by, or with the licence of the Opponent. The evidence suggest that this is true generally in a retail context, but the likelihood is particularly high where the retail services relate to goods known to be sold by the Opponent. In that regard it is noted that the Opposed Trade Mark Application covers “Retail services or wholesale services for toiletries; Retail services or wholesale services for cosmetics” and that the Opponent has registered and uses several marks in relation to toiletries and perfumes. Even if a customer enters a “CKJ” store operated by the Applicant, and then realises that their initial belief was incorrect, this is not sufficient to allay the likelihood of initial confusion.”

1. I do not completely agree with the opponent. Overall I consider that, given the reputation acquired by the opponent’s trade marks and the CKJ trade mark, a significant number of consumers would at the very least experience a reasonable doubt12 as to the existence of some sort of connection between the opponent’s trade mark and the Trade Mark if it were used on the Retail services or wholesale services for toiletries; Retail services or wholesale services for cosmetics that are listed in the opposed application.

¹¹ Exhibit L accompanying Miles-Graeter

¹² Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

1. However, I am not satisfied that it is likely the average consumer would become confused and be caused to wonder whether there was a connection between the opponent’s goods and services and those retail and wholesale of pharmaceutical, food and beverage services of the applicant bearing the Trade Mark.

2. Whilst the opponent has also engaged in brand extension from clothing into perfumes, this brand extension has not included any goods vaguely resembling those additional retail and wholesale services of pharmaceuticals or food and beverages claimed by the applicant. I am hard pressed to see how such services as the retail and wholesale of vitamin food supplements, ginger and alcoholic beverages would be a logical jump for Australian consumers to be caused to wonder if the opponent (who has a strong reputation in luxury clothing and perfume) had engaged in brand extension. I am not satisfied there could be an expectation amongst Australian consumers that the opponent would extend a subsidiary brand to engage in the retail and wholesale of pharmaceuticals, food and beverages.

3. I am satisfied that the opponent has established the section 60 ground of opposition in relation to those services of the applicant being Retail services or wholesale services for toiletries; Retail services or wholesale services for cosmetics. I will now consider the remaining grounds of opposition in relation to those services remaining in the opposed application.

Section 42(b) - Contrary to Law

1. Section 42 of the Act provides:

   An application for the registration of a trade mark must be rejected if:

   (a)  the trade mark contains or consists of scandalous matter; or

   (b)  its use would be contrary to law.

2. The representatives for the opponent, submitted that the use of the applicant’s Trade Mark for its remaining services in class 35 would breach sections 18 and 29 of the Australian Consumer Law (being Schedule 2 to the Competition and Consumer Act 2010) which proscribe misleading or deceptive conduct or the making of false or misleading representations. The opponent stated that the threshold for establishing misleading or deceptive conduct under the Australian Consumer Law was higher than that required by section 60 of the Act.

1. As I have found that the use of the opposed trade mark is not, at a minimum, likely to “deceive or confuse” under section 60 when applied to the remaining services in the opposed application, it follows that the use is not, on the stricter test posited by the Australian Consumer Law, likely to mislead or deceive, nor do I believe use would amount to a false representation in terms of section 29. I thus find that the opponent has not established the ground of opposition under section 42(b).

Section 58 - Ownership

1. Section 58 of the Act provides:

Applicant not the owner of the trade mark

The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.

1. Ownership of a trade mark may arise in two different ways – at statute by the filing of an application to register that trade mark13 in relation to particular goods or services14, or at common-law by the use of that trade mark on the particular goods or services or goods and services which are the same kind of thing. The owner of the trade mark is the person who first uses it, or first files the application, whichever is the earlier. For the purposes of demonstrating ownership the first use need only be a small amount15.

2. The opponent has established that it has used a substantially identical trade mark being CKJ before the filing date of the Trade Mark. The opponent has successfully established the first two hurdles in respect of this ground of opposition. However, the opponent fails at the third hurdle, being use of the trade mark on the ‘same kind of thing’. In Colorado Group Limited v Strandbags Group Pty Limited Allsop J stated the following in respect of the ‘same kind of thing’:

   The aim of the enquiry is not to find some broad genus in which some common functional or aesthetic purpose can be identified. Nor is it an enquiry about the type of trade in which concurrent use might cause confusion. Rather, it is identifying, in a practical, common sense way, the true equivalent kind of thing or article.16

¹³ Identical or substantially identical trade marks: Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd 10 IPR 402 at 413.

¹⁴ ‘the same kind of thing’ Re Hicks’ Trade Mark (1897) 22 VLR 636, 3 ALR 75 at 639-40.

¹⁵ Thunderbird Products Corporation v Thunderbird Marine Products Pty Ltd (1974) 131 CLR 592, 600 (Jacobs J).

¹⁶ Ibid [89].

1. The opponent’s evidence has established that it has used the CKJ trade mark on clothing but this is not the ‘same kind of thing’ as the retail and wholesaling of pharmaceuticals, food and beverage that are of interest to the applicant; they are not true equivalents. As such, the opponent has not established the section 58 ground of opposition in relation to the remaining services listed in the opposed application.

Decision

1. Section 55 of the Act provides:

55 Decision

(1)    Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(a)to refuse to register the trade mark; or

(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

Note:       For limitations see section 6.

1. I find that the opponent has met the onus upon it, in terms of the ground of opposition under section 60 in relation to those services being: Retail services or wholesale services for toiletries; Retail services or wholesale services for cosmetics.

2. Accordingly, I wrote to the applicant on 5 August 2021 advising them that I would provide them with two weeks in which to delete the conflicting services from the Trade Mark specification. I advised that if this was done, I would issue a decision whereby the Trade Mark with the amended specification would be able to proceed to Registration pending any appeal from the opponent. The applicant has responded and requested an amendment that deletes the services in conflict.

3. Accordingly I accept for possible registration trade mark application no. 1977830 in respect of the amendment specification for services in class 35.

Costs

1. It is usual for costs to follow the event, as the opponent has been successful in its opposition to some of the applications services, I see no reason to depart from that principle here. I award costs against the applicant under section 221 of the Act in terms of Schedule 8 of the Regulations.

Bianca Irgang Hearing Officer

Oppositions and Hearings 27 August 2021